TMEP 1002.04: Establishing Country of Origin

This is the October 2015 Edition of the TMEP

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1002.04    Establishing Country of Origin

To obtain registration under §44(e), the applicant must be the owner of a valid registration from the applicant’s country of origin. Kallamni v. Khan, 101 USPQ2d 1864 (TTAB 2012) (finding that registrant’s shipment of product did not create a bona fide and effective commercial establishment in the European Union, that registrant had not established the European Union as his country of origin, and therefore registrant’s European Union registration could not serve as a basis for registration under §44(e)); TMEP §1002.01. To obtain a priority filing date under §44(d), the applicant’s country of origin must be a treaty country, but the foreign application that is the basis for the priority claim does not have to be filed in the applicant’s country of origin. TMEP §1002.02. An applicant domiciled or organized in the United States may be entitled to registration under §44(e) if the applicant can also claim a country of origin other than the United States. See TMEP §1002.05.

Section §44(c) of the Trademark Act defines the applicant’s country of origin as “the country in which he has a bona fide and effective industrial or commercial establishment, or if he has not such an establishment, the country in which he is domiciled, or if he has not a domicile in any of the countries described in paragraph (b) of this section, the country of which he is a national.” Under this definition, an applicant can have more than one country of origin.

If a §44 applicant is domiciled or incorporated in the country claimed, the examining attorney should presume that the country is the applicant’s country of origin, and should not issue any inquiry about the applicant’s country of origin.

If a §44(d) applicant is not domiciled, incorporated, or organized in a treaty country, the examining attorney must require the applicant to establish that it was domiciled, incorporated, or organized, or had a bona fide and effective industrial or commercial establishment, in a treaty country during the six-month priority period beginning at the date of filing of the foreign application. See TMEP §1002.02.

If a §44(e) applicant is not domiciled, incorporated, or organized in the country that issued the foreign registration, the examining attorney must require the applicant to establish that the country is its country of origin as of the date of issuance of the foreign registration. In this context, applicant is to be construed broadly, as defined in 15 U.S.C. §1127, to embrace the legal representatives, predecessors, successors, and assigns of the original owner of the foreign application or registration. Thus, an applicant for registration in the United States who is the assignee of a foreign registration, but cannot establish that the country which issued the registration is its country of origin prior to the assignment, or to the filing of the U.S. application, may still claim the benefit of registration under §44(e) because the requirement that the applicant be the owner of a valid registration from the applicant’s country of origin was perfected by its predecessor in interest.

Generally, a written statement by the applicant or the applicant’s attorney that the applicant has had a bona fide and effective industrial or commercial establishment in the relevant country during the six-month priority period beginning at the date of filing of the foreign application (for §44(d) applicants), or as of the date of issuance of the foreign registration (for §44(e) applicants), will be sufficient to establish that the country is the applicant’s country of origin. This statement does not have to be verified. If a §44(d) applicant establishes its country of origin by submitting this statement, and later perfects its §44 basis by submitting a foreign registration issued by the same country, it is not necessary to require another statement as to the foreign registration.

If the application is otherwise eligible for approval for publication, or in condition to be allowed for registration on the Supplemental Register, the examining attorney may attempt to contact the applicant by telephone or e-mail to obtain the statement. If the examining attorney is unable to reach the applicant by telephone or e-mail, he or she must issue an Office action. If the applicant responds by telephone or e-mail, the examining attorney must issue an examiner’s amendment to enter the statement into the record.

If any evidence in the record contradicts the applicant’s assertion that it has a bona fide and effective industrial or commercial establishment in the relevant country, the examining attorney should require the applicant to set forth the specific circumstances which establish that the applicant maintains a bona fide and effective industrial or commercial establishment in the country. Relevant factors include the presence of production facilities, business offices, and personnel.

The presence of an applicant’s wholly owned subsidiary in a country does not, by itself, establish country of origin. See In re Aktiebolaget Electrolux, 182 USPQ 255 (TTAB 1974). The fact that the applicant is wholly owned by a foreign company does not establish country of origin. See Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783 (TTAB 2006).

The sale of goods or services outside the United States through related companies or licensees does not create a bona fide commercial establishment and thus does not establish country of origin. Id.; see also Ex parte Blum, 138 USPQ 316 (Comm’r Pats. 1963) (country of origin cannot be established by relying on contractual relationships with a licensee in another country).

The United States, by definition, is not a country that has a treaty with the United States. Therefore, the term “country of origin” in §44(b) and (c) means a country other than the United States. In re Fisons Ltd., 197 USPQ 888 (TTAB 1978); see TMEP §1002.05.

See TMEP §1002.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to registration under §44(e), and TMEP §§1002.02 and 1003.01 for information about how the examining attorney should handle an application in which the applicant is not entitled to priority under §44(d).